Outline of Patent Attorney Act and Its History of Revisions

for Further Improving the Quality of Patent Attorneys in Japan

October 27, 2014 Shinichiro Hara

International Cooperation Division Japan Patent Office

TOPIC 3, Regional Workshop on Human Resource Development of Patent/Trademark Agents for ARIPO Member States and Observer States, Harare, Zimbabwe, October 27 & 28, 2014

1. Overview of Japan Patent Office 2. Japanese Patent Attorney System 3. Recent Amendments to Further Improve the Quality of Patent Attorney

Services

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2

1. Overview of Japan Patent Office

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Japan Patent Office

Patent and Design Examination Department

Policy Planning and Coordination Department

Trademark and Customer Relations Department

Patent Examination Department (Mechanical Technology)

Patent Examination Department (Chemistry, Life Science and Material Science)

Patent Examination Department (Electronic Technology)

Trial and Appeals Department

1. Granting industrial property (IP) rights 2. Drafting laws & regulations on IP 3. Promoting international harmonization and

assistance to developing countries 4. Reviewing the IP rights system 5. Supporting SMEs and universities 6. Improving information services on IP

Responsibility of JPO

Small and Medium Enterprise Agency

Agency for Natural Resources and Energy

1. Overview of Japan Patent Office - Organization & Roles

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FY 2014 expenditure budget 126 billion yen (US$ 1.26 billion)

*1 dollar ≒ 100 yen

Personnel

Total: 2,837 employees (FY2014)

Budget

Source: Japan Patent Office

Information systems

21%

Personnel 26%

Examination, appeal/trial

33%

Others 20% Patent

examiners; 1,702; 60%

Design examiners;

49; 2%

Trademark examiners;

142; 5%

Administrative judges; 387;

14%

Clerks; 557; 19%

Incl. 492 fixed-term examiners

1. Overview of Japan Patent Office - Budget & Personnel

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2. Japanese Patent Attorney System

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- In Japan, legal service is one of the strictly regulated areas of business - Lawyers, as well as patent attorneys, can work as agents for conducting procedures before the JPO

2. Japanese Patent Attorney System - Overview – Japanese Legal Services

Lawyers = Legal Service*

Tax Accountants Conducting taxation

procedures

Judicial Scriveners Registering

companies, land, etc.

Patent Attorneys Conducting

procedures before the JPO

E.g.: Litigation in general , consultation on domestic/foreign laws

… …

… …

*Note: No person other than an attorney may, for the purpose of obtaining compensation, engage in the business of providing legal advice or representation, …, or providing other legal services in connection with any lawsuits, non-contentious cases, or objections, … etc., or other general legal services, or acting as an intermediary in such matters; provided, however, that the foregoing shall not apply if otherwise specified in this Act or other laws. (Attorney Act, §72)

JPO

Courts

- Filing IP applications

- Responding to Office Actions

- Trials/Appeals - Oppositions

- Suits against appeals/trial decisions by JPO

- Infringement lawsuits on industrial property (additional qualification required; to be jointly represented with lawyers)

Representation

Third Parties Customs ADR Foreign IP Offices

Patent Attorney

Contracts/ Licensing

Lawsuits Document preparation

Applications for suspensions of

releases

2. Japanese Patent Attorney System - Overview – Scope of Business

- The primary business of the patent attorney as a representative is to conduct procedures before the Japanese Patent Office, for patents, utility models, designs & trademarks

Arbitration & mediation

Representation for …

1 2 3 4 5

Note: In the above chart, 1, 2 & 3 may only be dealt with by either qualified lawyers and/or patent attorneys 7

- Patent attorneys’ scope of business has gradually been expanded

2. Japanese Patent Attorney System - Overview – Scope of Business

Procedures before the JPO (Patents, Industrial Designs, Trademarks etc.)

ADR Procedures before customs on goods infringing IP

Lawsuits against appeals/trial decisions by JPO

1899

1998

1948

Infringement lawsuits on industrial property* 2002

Contracts** Preparing documents for submission to foreign IP Offices** 2007

Consultation on the Protection of Invention** 2014

Note: * Additional qualification necessary; to be represented jointly with lawyer (attorney at law). ** Anybody can conduct these services; patent attorneys can do so under their professional responsibilities. 8

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- Japanese patent attorneys can be certified in several ways

1. Any of the following enables persons to be certified as patent attorneys:

2. Practical Training (conducted by JPAA) – added under the 2007 amendment

3. Registration on Japan Patent Attorneys Association (JPAA)’s Register

2. Japanese Patent Attorney System - Overview – Steps for Certification

(1) Pass the National Examination for Patent Attorney

(2) Certified as Lawyer (Attorney at Law)

(3) 7 years experience as examiner/appeal examiner at JPO

+

+

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- The number of patent attorneys has been steadily increasing

4,102 4,278 4,503 4,776

5,121 5,548

6,002 6,552

7,061 7,571 7,806

8,183 8,713

9,146 9,657

10,171

0

2,000

4,000

6,000

8,000

10,000

12,000

1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 2013

2. Japanese Patent Attorney System - Number of Patent Attorneys

Source: Japan Patent Office

Note: The scope of patent attorneys’ businesses differs from country to country. For example, in the US, patent agents can only practice before the USPTO on patents, whereas the scope of a Japanese patent attorney’s business includes not only patents but other fields of intellectual property.

US UK Germany France EPO China ROK Japan

Number of Patent Attorneys/Agents(1) 42,033(2) 1,956 3,200 909 10,427 14,679 7,369 9,657

Number of Patents Filed 542,815 23,235 61,340 16,632 148,560 652,777 188,915 342,796

Approx. No. of patent applications per attorney/agent

12.9 11.9 19.2 18.3 14.2 44.5 25.6 35.5

2. Japanese Patent Attorney System - International Comparison (as of 2012)

(1) As of March 2012 for EPO; April 2012 for US; October 2012 for China & France; November 2012 for UK; End 2011 for Republic of Korea

(2) includes patent attorneys & patent agents

Source: Institute of Intellectual Property, Tokyo

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1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 2013 12

- Administered by the Council on Industrial Property (Secretariat: Japan Patent Office) - Since around the end of 1990s, the number of successful candidates has generally been increasing

2. Japanese Patent Attorney System - Patent Attorney Examination

Patent Attorney Examination Number of Successful Candidates & Pass Rate

(1) to check if applicants have the basic knowledge required to perform a patent attorney’s business, and (2) to narrow down the number of applicants eligible to take the essay & interview examination

to check the applicants’ comprehensive abilities in terms of legal interpretation, comprehension, judgment, logical thinking, written communication, etc.

to check the applicants’ abilities in terms of oral communication, based on their ability tested in the Essay part

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- The National Patent Attorney Examination is conducted to determine whether or not persons have the knowledge and ability needed to become patent attorneys”

- The Exam consists of the following 3 parts:

1. Multiple Choice

2. Japanese Patent Attorney System - Patent Attorney Examination

2. Essay

3. Interview

↓

↓

- Examination includes both legal and technological subjects - Knowledge on industrial property laws is mandatory in all parts of the exam, but technological

subjects are elective

1. Multiple Choice

2. Japanese Patent Attorney System - Patent Attorney Examination

2. Essay

3. Interview

↓

↓

Industrial Property* Laws Treaties on Industrial Property

Copyright & Unfair Competition Laws

Industrial Property Laws Legal or Technological Subjects (elective)

Industrial Property Laws

Note: * *Industrial Property: Patents, Utility Models, Designs & Trademarks 14

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- The successful completion of “Practical Training” is a precondition to being registered as a patent attorney

- Patent attorneys not fulfilling the duty to enroll in continuing education are subject to disciplinary action by JPAA and Minister of Economy, Trade and Industry

2. Japanese Patent Attorney System - Training and Continuing Education

Pass Patent Attorney Exam

[Mandatory] Practical Training

[72 hours] ・Professional Responsibility ・Basics on: - IP Laws and Regulations - Treaties & other practices

Registration [Optional] Beginner Training

[Mandatory] Continuing Education

[at least 70 credit hrs. in 5 years] ・Professional Responsibility [mandatory, 10 hrs.] ・Subjects on PA service, on subjects such as - IP Management in the SME - Global issues

NEW [Optional] OJT on Specification Drafting

[100 hrs.]

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3. Recent Amendments to Further Improve the Quality of Patent Attorney Services

- As a part of the Judicial System Reform, the scope of a patent attorney’s services was expanded based on the 2002 amendment to include the representation of clients in infringement lawsuits involving industrial property. Also, quality assurance measures were added.

3. Recent Amendments to Further Improve the Quality of Patent Attorney Services 2002 Amendment

E.g.: 3-Year Deregulation Program (Cabinet Decision, March 2001) “In order to appropriately meet the growing demand for legal service, necessary

measures are to be taken, including, opening the door for non-lawyer professionals to represent clients in limited areas/lawsuits”

Quality Assurance Measures -Training on civil procedure practices (45 hrs.) -Final evaluation exam

Expanded Scope of Business: Representation* in

infringement lawsuits involving industrial property

Note: * to be jointly represented with lawyers, except decided otherwise by the Court 17

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- In response to the growing need to strengthen the professional ability and responsibility of qualified professionals, new measures on quality assurance were implemented based on the 2007 amendment

3. Recent Amendment to Further Improve the Quality of Patent Attorney Service 2007 Amendment

Quality Assurance Measures -Continuing Education (Training)

Quality Assurance Measures -Practical Training

Precondition for Registering Non-Compliance Subject to Disciplinary Action

Report on the Direction of Revision of Patent Attorney System (Industrial Structure Council, January 2007)

“Taking into consideration the diversified needs for patent attorney services, as well as greater responsibilities of qualified professionals, training that ensures the ability of patent attorneys should be

made obligatory”

A scandal involving some architects forging documents on earthquake resistance standards (November 2005 - )

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3. Recent Amendment to Further Improve the Quality of Patent Attorney Services 2014 Amendment – Background

PCT Applications from Japan Number of SME Consultations

29,291 31,524

37,974

42,787 43,075

Source: Tokyo Metropolitan SME Support Center Source: JPO

Filed by Patent Attorneys

Filed by NON-Patent Attorneys

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3. Recent Amendment to Improve the Quality of Patent Attorney Service 2014 Amendment – main revisions

- Consultation services on how to protect inventions

- Send PAs overseas (JETRO Office) to assist Japanese business*

- Relaxed rule on conflict of interest

- Continuing education - Enhanced IP management in

SMEs - JPAA’s Guideline on client-

attorney privilege (ongoing)

- Revision of JPAA’s Guideline on blocking the flow of information in offices

The main points of the 2014 review are to leverage and enhance the capacity of PAs in assisting: 1. Japanese companies’ IP activities worldwide 2. SMEs in managing their IP

Main Revisions Main Revisions

Note: *not revision of the act

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3. Recent Amendment to Further Improve the Quality of Patent Attorney Services 2014 Amendment – purpose of revision

Expand scope of patent attorneys’ activities

JPAA’s Autonomous Activities for Quality Assurance

Deregulation Revision of JPAA’s Internal Guideline

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Conclusion

The activities & responsibilities of patent attorneys, the principal experts in assisting industries and businesses in the IP field, have been steadily expanding over the years

In the meantime, the level of their professional ability has been raised based on the Patent Attorney Examination and the JPAA’s activities, such as training, in order

to guarantee quality assurance

Thank you

Shinichiro Hara hara-shinichiro@jpo.go.jp

Tel +81-3-3503-4698

TOPIC 3, Regional Workshop on Human Resource Development of Patent/Trademark Agents for ARIPO Member States and Observer States, Harare, Zimbabwe, October 27 & 28, 2014